New Presentation of Same IPR Art Thwarted by Estoppel

Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories.

In The California Institute of Technology v. Broadcom Limited, et al., (here) the Central District of California found that IPR estoppel applies where the same IPR reference is later raised under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a), rather than as a “patent or printed publication” as in the IPR. Continue Reading IPR Art Simultaneously Qualifying as Known or Used Subject to Estoppel

ITC Staff Attorney Not Bound by Estoppel

Plaintiffs are painfully aware of the Patent Trial & Appeal Board (PTAB) and its potential to derail a patent litigation. Indeed, post-SAS patent owners facing motions to stay pending PTAB review are left with even less to argue. Even where a stay is avoided, the speed of the PTAB can undermine traditional litigation pressure points that traditionally drove parties to settlement (e.g., Markman). As such, plaintiffs are increasingly viewing the International Trade Commission (ITC) as the strongest foil to a PTAB attack.

The ITC, having its own mandate for speed does not stay pending PTAB review.  Likewise, an ITC Exclusion Order can be issued within the same time frame as a PTAB Final Written Decision, or faster. These advantages are not insignificant in today’s patent monetization landscape. But, the ITC is not without its PTAB trade-offs for Patent Owners.

Continue Reading PTAB Estoppel May Not Stick at ITC

PatentsPostGrant.com + IPO’s IP Chat Channel CLE This Week

I have written extensively about the threat of PTAB estoppel to established patent prosecution practices. This Thursday, I, along with my co-panelists, will explore PTAB estoppel as well as other aspects of res judicata and issue preclusion in the IPO Chat Channel program (2-3PM EST) entitled: Patent Prosecution Estoppel from PTAB Proceedings

Register: (here).  

On Wednesday, this month’s edition of the PatentsPostGrant.com free webinar series will be held @ 2PM (EST). The March Webinar is entitled: Evolution of PTAB Trial Practices.

Register: (here)

I am looking forward to both of these programs.